USA

• 1) Trademarks
• 2) Service marks
• 3) Collective marks
• 4) Certification marks

• ・Three-dimensional [3D] marks
• ・Sound marks
• ・Motion marks
• ・Color marks
• ・Position marks
• ・Hologram marks
• ・Olfactory marks
• ・Touch marks
• ・Taste marks
• ・Trade Dress

In Japan, a trademark right originates with the registration of the trademark (the 'registration principle'), whereas in the USA, a trademark right originates with the use of the trademark (the 'use principle').

• ⇒ Based on the use principle, if an unregistered trademark is used then the right will originate under common law of the region in which it is used. On the other hand, a trademark right will be deemed to be abandoned if it is registered but not used.
• ⇒ During the period between filing and registration it is necessary to submit proof of use, otherwise registration will not be approved (with the exception of some Madrid Protocol applications).

The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark (Trademark Law Article 45 (15 U.S. Code § 1127)).

• ⇒In commerce, the use of a mark on or in association with goods. Use in advertising (i.e. not in physical form such as on goods or packaging) shall not be deemed "use in commerce" in the case of goods.
• ⇒For service marks, use of a mark in advertising shall be deemed "use in commerce".
• ・Regarding goods: a mark shall be deemed to be in use in commerce when it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and the goods are sold or transported in commerce.
• ・Regarding services: a mark shall be deemed to be in use in commerce on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

• ⇒ In order to maintain a trademark right, it is necessary to continue to use said trademark and also submit evidence of use or an affidavit to that effect to the USPTO.
• Statement of Use (Article 8) [=§8 affidavit]
  Except in the case of applications based on Japanese trademarks, it is necessary to submit a Statement of Use at the time of registration. Also, it is necessary to submit Statements of Use between the fifth and sixth years after the date of registration, and at the time of the 10-year trademark renewal procedure, i.e. three times in total, until the first renewal is carried out.
  Submission of several Statements of Use in this way is required in order to firmly enforce the 'Use Principle' of the USA Trademark Law.
• Statement of Incontestability of Trademark Right (Article 15) [=§15 affidavit]
  Between the fifth and sixth years after the date of registration, it is possible to submit a statement regarding the incontestability of a trademark right (Article 15, statement of incontestability of trademark right). Under certain conditions including that the mark has been in continual use for five years since registration and that it is currently still in use in commerce, etc., the statement is to the effect that the mark's validity cannot be contested by third parties.
  While it is not necessary to submit a statement of incontestability, it is recommended to do so as it will lead to a more stable and stronger trademark right, in the absence of exceptional circumstances. If a statement of incontestability is submitted between the fifth and sixth years at the same time as submitting the second statement of use (see above), the associated costs may be lower.

• - 10 years from the date of registration
• - Can be renewed for 10 years at a time
• - Even after the trademark right has expired, renewal is still possible within a six-month grace period
• - Important: trademarks that are continuously unused will be deemed to be abandoned

• - Drawing (example of mark) *not required for marks consisting of standard characters
• - Description of goods and services (classes, designated goods/services)
• - Applicant's name and address
• - Filing basis
• - Government fee (paid to USPTO)

[NOTE]
It is necessary to clearly indicate one of the following forms of application as the basis for the application.
(1) Application based on actual use
(2) Application based on intent to use
(3) Application based on national application/registration (priority claim)
(4) Madrid Protocol application designating the USA (5) A combination of the above